Settlement of an IPR Proceeding Does Not Necessarily Stop Review the Patent

By Reza Mollaaghababa

In an inter partes review (IPR) proceeding, a petitioner challenging a patent and the respective patent owner can reach a settlement and request that the Patent Trial and Appeal Board (PTAB) terminate the proceeding.  In particular, Section 317(a) of the America Invents Act (AIA) states that an IPR “… shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.”

Recently, in Blackberry Corporation and Black Berry Limited v. MobileMedia Ideas, LLC (IPR2013-00036; US Patent No. 6,871,048), the PTAB, in response to a joint motion by the petitioner (Blackberry) and the patent owner (MobileMedia) to terminate the IPR, allowed the termination of the proceeding with respect to the petitioner, but not with respect to the patent owner.  The PTAB indicated that “[W]hile the parties may agree to settle their issues related to the involved patent, the Board is not a party to the settlement and may determine independently any question of patentability.” See, 37 C.F.R. §42.74(a).

The advanced stage of the proceeding was an important factor in the PTAB’s decision not to terminate the proceeding with respect to the patent owner.  The PTAB indicated that after its decision on March 18, 2013 to institute the trial, MobileMedia had filed a patent owner response, and Blackberry had filed a reply to that response.  In addition, an oral hearing was held on October 18, 2013.  “In sum, the issues for trial had been briefed fully at the time the parties moved to terminate the proceeding.”  The PTAB thus decided that “… in view of the advanced stage of this proceeding, rather than terminate this proceeding the Board will proceed to a final written decision.”

In view of this PTAB’s decision, a patent owner involved in an IPR proceeding who has an interest in reaching a settlement with the petitioner must take into account the possibility that the PTAB may not agree to terminate the proceeding even if the petitioner agrees to do so.  In particular, such a patent owner should consider engaging the petitioner in serious settlement discussions before the proceeding reaches an advanced stage, and especially before an oral hearing is held.

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